Appeal No. 2006-2074
Application No. 10/158,197
In the instant case appellants have presented two affidavits from Mr. Scott
Fedor to show, commercial success in the form of increased market share,
customer praise, and copying by competitors.
On pages 9 through 10 of the answer, the examiner states that the
evidence submitted by appellants is insufficient to establish commercial
success. The examiner reasons that the evidence does not compare similar
products, further the examiner states, on page 10 of the answer:
customers may have purchased the Contemporary knives simply due
to the trend of customers to purchase the "latest and greatest” products
to hit the market. In other words, customers buy a specific product
simply because it is new, and they want to have the most recent line of
knives introduced to the market. The trends of the Unit Share factually
support this assumption as shown in Tables 3A. Note that the Unit
Share of the Contemporary line peaked in May of 2003, then steadily
declined in June through April of 2004.
Further, the examiner states that the consumer praise is weak as no
demographic information is provided. Finally, the examiner states that
Sanelli was available prior to the invention, implying that the evidence could
be showing that Sanelli was the product being copied. Additionally the
examiner states, “copying a product to sell does not make it patentable,
merely a desirable commodity for selling.”
While we concur with the examiner that the individual pieces of
evidence alone may not establish commercial success, we find that on
balance the Appellants’ evidence as a whole does present sufficient facts to
outweigh the examiner’s prima facie case of obviousness.
Evidence of Secondary considerations such as commercial success
have relevancy in determining obviousness or non-obviousness Graham v.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007